Re: ProCD as a contract case: was part of the NBA/Motorola thread

Robert A. Kreiss <kreiss[_at_]odo.law.udayton.edu> wrote:
>
> Mark is sort of right that ProCD does not do a thorough
> constitutional preemption analysis. On the other hand, the court's
> analogy of ProCD with Aronson v. Quick Point Pencil and its statement
> that the shrinkwrap license in ProCD "serve[s] the same
> procompetitive functions as does the law of trade secrets"
> (implicitly, I think, invoking Kewanee Oil) suggests that the court
> was saying that it would not find constitutional preemption either.
>

I agree entirely that the court must have implicitly done a constitutional preemption analysisand found no preemption -- if not, it could not have reached the result it did. But it is disturbing that he didn't discuss the issue in more detail. [It was fully briefed]

Bob's comment raises another problem with the court's opinion. The sentence he is quoting reads in full "To the extent licenses facilitate distribution of object code while concealing the source code (the point of a clause forbidding disassembly), they serve the same procompetitive functions as does the law of trade secrets." This is wrong.

A right to reverse engineer is an integral part of trade secrets law; indeed, the Court has repeatedly suggested it may be the primary thing that saves trade secrets statutes from federal preemption. To argue that a contract provision *forbidding reverse engineering* "serves the same procompetitive functions as does the law of trade secrets" just makes no sense to me.

Mark Lemley
Assistant Professor, University of Texas School of Law Of Counsel, Fish & Richardson, P.C.
mlemley[_at_]mail.law.utexas.edu

For information on the Intellectual Property program at UT, see http://www.utexas.edu/law/intelprop/ Received on Wed Feb 19 1997 - 15:41:06 GMT